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2022 (11) TMI 213
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.... off. The said interim relief was rejected and this has led the appellant to file the present appeal. Factual Context 3. The appellant states that it was incorporated on 28.10.1999 and thereafter, it adopted the mark "VASUNDHRA/VASUNDHRA JEWELLERS" to commence the business of "jewellery in precious metals and gems". It operates one showroom at Pitampura in Delhi. It further states that it has been using the said name extensively, continuously and uninterruptedly. Therefore, the said marks have acquired immense goodwill and reputation. 4. Thereafter, on 23.05.2003, the appellant applied for registration of the device mark " ", claiming use of the mark since 01.01.1999, under Class 14 (trademark application no: 1200939). The said mark is registered and valid up till 23.05.2023. The appellant also states that on 26.06.2011, it obtained registration for its domain name, that is, www.vasundhrajewellers.com, and has further, obtained registrations of various other domain names, which are listed below:- i. www.vasundhra.com ii. www.vasundhara.com iii. www.vasundhra.in iv. www.vasundhrajewellers.in v. www.vasundhrajewellers.com vi. www.vasundhrajeweller.in 5. On 19.12.2017,....
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....respect of the said marks. The appellant claims that respondent no. 1 is using the mark "VASUNDHRA FASHION / ", which is identical/deciptively similar to the VASUNDHRA Trademarks. 13. On 24.05.2022, the appellant filed a suit under Sections 29, 27(2) and 135 of the Trade Marks Act, 1999, (hereafter 'the TM Act') inter alia, seeking permanent injunction against respondent no. 1 from infringement, passing off, its relevant trademarks. The Appellant's Case 14. The case set up by the appellant is that it is the prior and registered proprietor of the VASUNDHRA Trademarks, registered for goods falling under Class 14 and thus, the impugned marks used by respondent no.1, dealing in allied goods, is deceptively similar to its marks. The appellant relies on the decision of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories: (1965) 1 SCR 737 and on the strength of the said decision, contends that the word 'Vasundhra' is an essential feature of its trade mark and thus, in terms of Section 29(2)(b) of the TM Act, the use of the impugned marks by respondent. 1 for allied and cognate goods would amount to infringement of the VASUNDHRA Trademarks. 15....
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....the said term. 21. Respondent no. 1 referred to the appellant's reply dated 01.07.2019 to the Registrar of Trademarks against the Examination Report and on the strength of the said report, contended that the appellant could not be allowed to "approbate and reprobate" as it had claimed that the mark has to be read as a whole; and since the appellant's marks are device marks, no confusion would be caused with the other marks that use the word "Vasundhra". 22. Respondent no. 1 had further claimed protection under Section 34 of the TM Act as it uses its device mark for goods falling under Classes 24 and 25, and admittedly, the appellant has not preferred any application for registration of its goods under the abovementioned classes. The Impugned Judgment 23. The learned Single Judge found that albeit the VASUNDHRA Trademarks were registered, however, the appellant did not hold any registration for the word mark "VASUNDHRA". The learned Single Judge further held that "device mark, the essential feature of the same is equally entitled to protection... at the same time, it has to remembered that in extending such protection, the party does not lay a claim of exclusivity in a mark to w....
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.... plans of trade progression, that is, to expand its business to other goods including those of the defendant no.1. The area of operation of the plaintiff and the defendant no.1 is also distinct; with the plaintiff being in Delhi, while the defendant no.1 being predominantly in the State of Gujarat. The defendant no.1 also has developed suitable goodwill of the mark in its favour, as is evident from its claim of having a gross sale of Rs. 13.30 Crore approximately between the period of December, 2020 to April 2022. Merely because the plaintiff deals in jewellery items, which by themselves are more costly thereby resulting in a higher turnover for the plaintiff, will not give a better right to the plaintiff over an otherwise a common name in India." 26. In terms of the impugned judgment, respondent no. 1 was further bound down to the statement made before the learned Single Judge that it would not use the impugned mark "" in the future. Submissions 27. The learned counsel appearing for the appellant has assailed the impugned judgment on, essentially, two fronts. First, he submitted that the reasoning that the word 'Vasundhra' is a common name in India and therefore, an exclusive r....
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....ndant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide Section 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trademark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks - the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The res....
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....g it with the conflicting mark is solely for the purpose of determining whether competing marks are deceptively similar when viewed as a whole. It is, thus, not permissible to hold that two competing marks are deceptively similar by examining a portion of one mark and comparing it with the portion of another mark, if the composite marks viewed as a whole are dissimilar. It is relevant to refer to the text from McCarthy on Trademarks and Unfair Competition, which explains the said principle as under:- "23.15 Comparing Marks : Differences v. Similarities [1] The Anti-Dissection Rule [a] Compare composites as a Whole : Conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the "anti dissection" rule. The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable custo....
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....rk has no trademark significance, leading to a direct comparison between only that which remains." [Underlined for Emphasis] 34. In the facts of the present case, the learned Single Judge had found that the appellant held registration of the device marks/composite marks that contain the word 'Vasundhra' but it did not have any registration of the word mark 'VASUNDHRA'. It is material to note that the appellant had applied for registration of the word mark but the same has not been granted to it as yet. The Court had, thus, found that the appellant did not have an exclusive right to use the word 'Vasundhra' except as part of its device trademarks. 35. This Court finds no infirmity with the said view. This Court concurs with the view that a proprietor of a trademark cannot expand the area or protection granted to the mark. Indisputably, the appellant does not enjoy the monopoly for use of the word 'Vasundhra'. 36. This Court is also of the view that competing marks viewed as a whole - 'The VASUNDHRA Trademarks' and the device mark "VASUNDHRA FASHION/ " - are not deceptively similar. The contention that the word 'Vasundhra is a dominant part of the trademarks and therefore, entitl....